Once the examiner establishes the novelty of the invention, he then proceeds to assess whether the claimed invention involves an inventive step. As it is known that patents are negative and monopoly rights, it is expected from the Government to practice caution and only award patent rights to worthy inventions.
A little bit of modification in the invention can get you through a novelty test. Furthermore, it may be possible for people to combine the teachings of multiple prior arts to come up with a new product without exercising an inventive skill at all.
The definition of inventive step can be derived from Section 2(1)(ja) of the Indian Patent Act, 1970 (as amended). According to it, “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
The requirements of technical advance and economic significance in Section 2(1)(ja) of the Indian Patent Act were inserted in Patents (Amendments) Act, 2005.
Before 2005, an inventive step simply meant a feature that made the invention not obvious to a person skilled in the art.
So, What is Inventive Step: Indian Perspective
To understand inventive step in India, we have to further inspect Section 2(1)(ja) of the Indian Patent Act, 1970 in detail and that’s what we are going to do next. Let’s get started.
If we dissect and analyze the definition of inventive step in Section 2(1)(ja), we come across either of the following three conditions:
1. Technical advance and not obvious, or
2. Economic significance and not obvious, or
3. Technical advance and economic significance and not obvious.
As the definition suggests, in order to understand the concept of inventive step, we must investigate the answers to the following questions:
1. what does it mean to have technical advance as compared to the existing knowledge?
2. what does it mean to have economic significance?
3. what does it mean to be not obvious to a person skilled in the art?
Technical Advance As Compared To The Existing Knowledge: What Does It Mean?
If there is a problem, attempts will be made to solve it. Over time, not only may the problem be resolved, but the solutions may also improve. When it comes to understanding technical advancement, a better solution than existing solutions could serve that role.
In the case of Communication Technology, for example, any solution that provides better latency, resource management, voice quality, efficiency, power consumption savings, reliability, quality of service (QoS), and so on would be considered technically advanced in comparison to previous solutions or existing prior arts.
Again, it is to be noted that a technical solution should be allowable as per the provisions of Indian law. For example, subject matter or solutions must not fall under the non-patentable subject matter as per the provisions of Section 3 & Section 4 of the Indian Patent Act.
Economic Significance: What Does It Mean?
In most cases, the focus of the examiner is on judging technical advancement. If the invention is technically advanced then having economic significance may not be required to pass the test of inventive step.
However, when the invention is found to be not technically advanced or in some cases, technically inferior, the role of economic factor becomes important. Or in other words, there may be existing solutions that may be more technically advanced than your invention.
In such cases, if your invention offers economic advantages such as reduced manufacturing cost, operational cost, maintenance cost, etc. Then your invention might be of economic significance eventually passing the test of inventive step.
Not Obvious To A Person Skilled In The Art or Non-Obviosuness: What Does It Mean?
Your invention has to be not obvious to a person skilled in the art (PSITA) in order to pass the inventive step test.
The next question that comes into our mind is about the phenomenon of PSITA.
So, Who is a Person Skilled in the Art (PSITA)?
A person skilled in the art is a hypothetical person who is well-versed in all prior arts. The person should be sufficiently skilled or knowledgeable and should have common sense. If there is a reasonable expectation of success, unpredictability doesn’t demotivate him.
From time to time, the Courts and IPAB (‘now abolished’) have rendered various decisions. As a result, we’ve gained some clarity over a period of time on what constitutes a person skilled in the art.
For better understanding, we have presented characteristics of the person skilled in the art which we learn from the court and IPAB decisions in India. Read on the following characteristics of the PSITA in India:
1. The invention should flow naturally to PSITA while thinking on the subject. PSITA has the knowledge of the prior art at the priority date.
2. The PSITA should be well-versed in the subject (competent craftsman, an engineer for example and not a mere artisan).
3. As the prior art is available to PSITA at the priority date, would he ask himself, “this gives me what I want?”
4. The PSITA is a normal but unimaginative person skilled in the art who can discern the inventive step on the basis of the general common knowledge of the art at the priority date.
5. The PSITA is neither a super-skilled nor a dumb and ignorant character. He is aware of the developments in the concerned field. He has the knowledge of the state-of-the-art (SOTA) and skills to perform experiments. Therefore, if there is a motivation to go ahead and try solving a problem with the assurance of reasonable success, the PSITA can certainly do that.
6. The PSITA has common sense and clearly understands what follow from the prior art.
7. If combination of the teachings of multiple prior-arts can lead to a reasonable success in solving a problem and if there is no breakthrough moment such as a ‘Eureka’ or ‘aha’ moment involved, it’d be obvious for the PSITA to combine the teachings of the prior-arts and reach the solution.
8. If there is reasonable assurance of success, unpredictability is not supposed to demotivate the PSITA.
9. The PSITA should be sufficiently skilled and knowledgeable. Therefore, he should not be merely a person of ordinary skills.
10. The PSITA is capable of understanding the prior art better than a person of an average knowledge. Moreover, he knows how to proceed further in the normal course of his research. The PSITA need not step by step guidance as he himself can work his way through it.
11. The invention should be obvious to the PSITA in view of prior-art teachings without knowing the invention. Therefore, the facts emanating only from the prior arts are to be considered to assess obviousness. The facts arising out of invention disclosure should not be used for obviousness.
12.The PSITA need not be from India.
These are not the only characteristics laid down by the decisions and practices of Indian Courts, IPAB, and the Indian Patent Office as it is not possible to include each and every case which has dealt with the question of who is a person skilled in the art.
However, the list of these characteristics above should give you a fair amount of understanding about the PSITA.
For your information, in USA, there is a concept of the person ordinary skilled in the art. While in India, the person is sufficiently skilled.
Now that we have understood the concept of who is a person skilled in the art, the concept of non-obviousness should be quite clear to you. Because the underlying principle for determining a ‘person skilled in the art’ is whether an invention appears obvious to him or not.
While discussing the obviousness, you’d find joy in reading windsurfing test in UK and how did it come about.
An Example of Inventive Step (Technical advancement and Obviousness)
Suppose, someone attaches an eraser to a pencil claiming that his new device can do both drawing and erasing. This product may be new thus passing the novelty test, however, there is no inventive step involved. But how?
Because without the knowledge of this product, the pencil and eraser are well known in every aspect including their use.
Further, a person who needs to use a pencil and eraser frequently would want both in the same place. So, there is already a motivation involved for him to act in this direction. So, the person skilled in the art i.e. who has knowledge of every known aspect of pencil and eraser would find it obvious to attach both.
This is a mere arrangement of two different devices and both devices continue to function independently of each other even after the combination, producing no synergetic effect. In other words, the mere arrangement of pencil and eraser has no technical effect or technical advancement.
So, we see, there is (a) no technical advancement and, (b) the alleged invention is not obvious to a person skilled in the art. Therefore, the alleged invention would not be inventive.
How Is Inventive Step Established?
It is important for you to know what goes into determining an inventive step. We just had a glance at the example of an inventive step in the previous section.
By following the steps below, not only an Examiner but also you can evaluate the inventiveness of your claimed invention in accordance with the Indian Patent Act.
So, let’s get right into it.
1. The prior art as a whole is considered so as to check whether such prior art (s) is (are) disclosing the invention.
2. To assess the inventive step, the claimed invention is considered as a whole. That is, the whole claim can not be rendered obvious just by taking some individual features out of the claim which are known or obvious.
3. If the claimed invention is contributing to no technical advancement and is of no economic significance, it is lacking inventive step.
4. It is allowed to combine teachings of multiple prior arts in order to assess obviousness to a person skilled in the art, PSITA.
It is important to mention here, that prior arts being combined should motivate the PSITA to actually combine the teachings of those prior-arts. Combining the teachings of multiple prior-arts is also called as mosaicing of prior arts.
5. The person skilled in art is identified characteristics of whom, we have discussed in this section.
6. The general attempt is made to find out what is inventive concept or feature(s) in a claim.
7. In respect of cited prior-art documents, the difference is identified between the claim or inventive concept and the cited prior-arts.
8. Here comes the person skilled in art, PSITA in picture. Without any knowledge of the claimed invention, which we have already seen in the characteristics of the PSITA, the PSITA judges the obviousness of the steps/ features constituted by those differences in previous point.
Here is one such example, for your understanding, showing the reasoning given by an European patent examiner.
Look at how the examiner combines teachings of multiple documents, identifies the difference between prior art D1 and the claimed invention, further identifies its technical effect arising out of that difference, then refers to another prior art document D2, and argues how skilled person would find it obvious to combine the teachings of D1 & D2 to arrive at the alleged claimed invention, etc.
Simple Invention Can Have Inventive Step
In the case of Avery Dennison Corporation vs Controller Of Patents And Designs on 4 November, 2022, the Hon’ble High Court observed that even simple inventions can be non-obvious and therefore can have inventive step.
Court said that you can’t judge an invention as obvious to a person skilled in the art just because the difference between the closest prior art and invention appears to be simple. This is valid, especially where the time gap between the publication of the closest prior art and the priority date of the invention is considerably big.
That is so, because if the simple difference was really obvious then someone would have come up with the invention already in that long time gap. Since no one has been able to think of the said simple invention, it indicates that the simple invention is actually not obvious.
For the argument that simplicity can’t defeat an invention, the court said: Way back in 1890, the House of Lords, in Vickers v. Siddell (1890) 7 R.P.C. 292 while considering simplicity in an invention observed:
“If the apparatus be valuable by reason of its simplicity, there is a danger of being misled by that very simplicity into the belief that no invention was needed to produce it. But experience has shown that not a few inventions, some of which have revolutionised the industries of this country, have been of so simple a character that when once they were made known it was difficult to understand how the idea had been so long in presenting itself, or not to believe that they must have been obvious to everyone.”The House of Lords, in Vickers v. Siddell (1890) 7 R.P.C. 292
In this article, we have tried to understand, one of the most important requirements, i.e., inventive step, for patentability in the Indian context. Therefore, we looked at Section 2(1)(ja) of the Indian Patent Act, which defines the inventive step.
You may want to look at 6 Requirements To Get A Patent In India. The requirement for an invention to have an inventive step for patentability is one of these requirements.
The discussion of the inventive step is incomplete without discussing its various aspects i.e. technical advance, economic significance, and non-obviousness.
During the discussion, we came across a person skilled in the art and expounded upon its characteristics. These characteristics have been derived and understood from various court’s and IPAB decisions.
After thoroughly discussing the notion of the inventive step, we looked at how it is evaluated by a patent examiner and how you may do it yourself.
We hope you are better prepared now after going through this article to assess the inventive step of a claimed invention.
Moreover, you should explore our specially curated content here on this page.
- Sankalp Rehabilitation Trust v. Hoffmann- Roche, 2009, IPAB
- Enercon v. Alloys Wobbens in 2013, IPAB
- Ajanta Pharma Limited v. Allergan Inc., 2011
- Glaxo Limited v. Fresenius Kabi Oncology Limited, 2013, IPAB